Intellectual Property Counsel

Description

The Intellectual Property Practice Leader will be responsible for providing leadership for the company's global patent strategy and all phases of portfolio management.  The IP Practice Leader  will collaborate with the Chief Technology Officer, senior  Business Unit (BU) leaders, general managers and employees to develop and execute the BU’s IP strategy, and will be accountable for all activities of the IP practice group globally, including; identifying key technologies and filing strategies, drafting and managing all domestic and foreign drafting and prosecution, reviewing  new products to ensure product clearance, developing and managing a strategic patent and trademark portfolio, managing outside counsel for patent drafting, prosecution and enforcement, and drafting various technology agreements.

The IP Practice Leader has a globally dispersed team of 16 patent attorneys and agents and leads a global organization of roughly 25. The IP Practice Leader reports to the Vice President and Deputy General Counsel and is a Global Legal department leader.

Primary responsibilities will include:

Manage all aspects relating to developing, protecting and leveraging corporate IP, including competitive IP analytics; IP procurement (including open innovation), protection, enforcement, licensing, and determining freedom to practice.

Proactively provide critical IP perspective to key decision-making bodies at Corporate and influence senior management to position the BU’s IP Portfolio as a key component of business strategy.

Assure exceptional IP support to BUs, including IP strategies leading to transactional opportunities, evaluation of in-licensing opportunities, negotiation support, and contract drafting and negotiation.

Oversight and critical review of outside counsel engaged in patent procurement activities, as well as attending to internal preparation and prosecution of U.S. and foreign patent applications.

Supervise and mentor global patent staff as to patent application drafting, prosecution and practice procedures before the US Patent & Trademark Office.

Persistently partner, challenge and counsel Corporate internal clients on opportunities to protect their inventions.

Render comprehensive intellectual property support to the BUs, as well as management of related patent management committees.

Requirments

15+ years relevant experience, preferably with senior level in-house experience.

Bachelors Degree in a relevant Science or Engineering focus (i.e., Chemistry, Biochemistry, Materials Science). M.S., Ph.D. or equivalent would be a "nice to have".

J.D. from an ABA-accredited law school, be a member in good standing of a state bar, and be registered to practice before the U.S. Patent and Trademark Office;

Expertise in IP to include strategic intellectual property counseling, patents, trademarks, opinions, licensing, litigation management and transactions

Expertise in US patent law;  working knowledge  of global patent systems.

Possess excellent patent legal and analytical skills, including demonstrated ability to independently formulate and draft patent applications,  office action responses,  complex license and joint development agreements, and to advise clients as to various intellectual property issues.

Excellent written and verbal communication skills, ability to work with people from diverse backgrounds and at different levels in the company (i.e., staff scientists, group directors, Vice Presidents, etc.).

Strong people leadership and time management skills with flexibility, creativity, resourcefulness to successfully prioritize and manage multiple, competing priorities simultaneously.

Effective communicator at all organizational levels, with strong influencing skills, and the ability to establish credibility with senior leaders throughout the organization.

Strong customer-service focus to build and sustain good working partnerships with key stakeholders and project teams.

Ability to travel domestically and internationally.

Must be eligible to work in the U.S. on a permanent basis.

Desired but not required – experience practicing in non-IP areas of law, e.g., regulatory or commercial.

How To Apply

Please forward your resume to :

Martin David

m.david@martindavidassociates.com

Direct line    : 1.248.792.6546

Cell/Mobile : 1.248.303.4620

Fax  :                    1.248.928.0917

www.martindavidassociates.com